Opinion
02 Civ. 7848 (HB)
August 12, 2003
OPINION AND ORDER
Plaintiff Playtex Products, Inc. ("Playtex" or "plaintiff') moves for summary judgment on its federal trademark-infringement claim, and defendants Georgia-Pacific and Fort James Operating Company (collectively, "Georgia-Pacific" or "defendants") cross-moves for summary judgment on Playtex's federal claims for trademark infringement, false designation of origin, and dilution and its pendant state-law claims for unfair competition and dilution. For the following reasons, Playtex's motion is denied and Georgia-Pacific's cross-motion is granted.
I. BACKGROUND
Marissa Stein, an intern in my Chambers during the summer of 2003 and a second-year law student at New York University Law School, provided assistance in the research and drafting of this opinion.
"Wet Ones" was first introduced as a product in February 1971, and WET ONES was registered in 1972 as a mark with the United States Patent and Trademark Office ("PTO") for "pre-moistened towelettes, impregnated with detergent for personal use," registration number 948,689. Because WET ONES was in continuous use for five consecutive years subsequent to its registration and is still in use, it has become uncontestable.See 15 U.S.C. § 1065; Gruner + Jahr USA Publishing v. Meredith Corp., 991 F.2d 1072, 1076 (2d Cir. 1993). Playtex claims that "Wet Ones," whose traditional usage is for babies and adult hands and face, created the market for wipes and remains the market leader. (Playtex claims that in 1997 it acquired Personal Care Group, which is the owner of the mark according to the records of the PTO.) Although wipes are generally similar and there is considerable cross-category use, manufacturers target the products to several different categories of use, such as hands and face, baby, medicated, personal hygiene, and feminine hygiene. Since 1998, Playtex has sold $170 million worth of "Wet Ones," and since 2000 has spent $13 million on advertisement and promotion of this product. In February 2002, Playtex introduced "Wet Ones Flushables," a product marketed specifically for "personal use" — i.e., as a supplement to toilet paper. "Wet Ones" and "Wet Ones Flushables" are sold in a variety of retail outlets, including grocery stores, drug stores, and club stores.
Sterling Drug, Inc. filed for the mark on March 8, 1971. On January 26, 1972, the PTO refused registration on the Principal Register "because the mark, as used with the goods and/or services, is considered to be merely descriptive thereof." The mark was registered on December 12, 1972. Georgia-Pacific states that the PTO eventually registered WET ONES based on evidence that the mark may have acquired secondary meaning, but does not elaborate further.
Georgia-Pacific owns the Quilted Northern brand, whose roots in the dry bath tissue market trace back approximately 100 years and which has sold $3 billion worth in the last five years. After one of Georgia-Pacific's competitors introduced a wipes product in 2000 ("Cottonelle Fresh"), Quilted Northern followed with a wipes product intended as an extension of its line of dry bath tissue products. On August 17, 2000, Georgia-Pacific filed an intent-to-use application ("ITU") with the PTO for FRESH MOIST and in 2001 introduced "Quilted Northern Fresh Moist" to the market. This product did not fare well and Georgia-Pacific began an effort to launch a second-generation product, which would feature an improved tub for dispensing the wipes and a new name. On April 22, 2002 Georgia-Pacific filed an ITU for MOIST ONES, and on April 24, 2002, it filed another ITU for QUILTED NORTHERN MOIST ONES. Georgia-Pacific introduced its wipes product, rebranded as "Quilted Northern Moist-Ones," into the market in May 2002. Georgia-Pacific's product is primarily sold in grocery stores and drug stores. Although pitched primarily for personal hygiene use, Georgia-Pacific also seeks to appeal to other uses and described it in a press release as a "general purpose wipe."
Playtex places significance on the fact that Georgia-Pacific disclaimed any right to use "moist" in these applications. On May 8, 2003, the PTO made final its refusal to register the mark because Georgia-Pacific refused to disclaim "quilted," which the PTO determined was merely descriptive of a feature of the wipes. The examining attorney recommended that Georgia-Pacific amend its application under Section 2(f), 15 U.S.C. § 1052(f).
Playtex sued for damages and injunctive relief for trademark infringement, see 15 U.S.C. § 1114; false designation of origin, see id. § 1125(a); dilution,see id. § 1125(c) and N.Y. Gen. Bus. L. § 360-1; and common law unfair competition.
II. DISCUSSION
On these motions for summary judgment, the evidence is viewed in the light most favorable to the non-movant on each motion and summary judgment is appropriate only if there is no genuine issue of material fact — that is, "the evidence is such that a reasonable jury could [not] return a verdict for the nonmoving party." See,e.g., Nabisco Inc. v. Warner-Lambert Co. ("Nabisco II"), 220 F.3d 43, 45 (2d Cir. 2000) (citing Fed.R.Civ.P. 56(c) and quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)).
A. Trademark infringement
Each party has moved for summary judgment on Playtex's trademark-infringement claim. Playtex contends that it is entitled to summary judgment (and Georgia-Pacific is not) because Playtex has an uncontestable federal trademark for WET ONES and because there is no meaningful difference — if in fact they are not identical — between the products, customers, and channels of trade of the two products. Georgia-Pacific contends that it is entitled to summary judgment on Playtex's trademark-infringement, false-designation-of-origin, and unfair-competition claims because Playtex has failed to show a likelihood of consumer confusion. Specifically, Georgia-Pacific argues that the marks WET ONES and QUILTED NORTHERN MOIST ONES are not similar, there is no evidence of actual confusion even though its product has been on the market since May 2002, and there is no evidence that Georgia-Pacific developed its product in bad faith.
Section 32 of the Lanham Act prohibits the unauthorized use in commerce of any "reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion." See 15 U.S.C. § 1114(1).
To support a finding of infringement, a plaintiff must show a probability, not just a possibility, of confusion. Confusion exists where there is a "likelihood that an appreciable number of ordinarily prudent purchasers are likely to be misled, or indeed simply confused, as to the source of the goods in question." There can also be confusion where consumers are likely to believe that the challenged use of a trademark is somehow sponsored, endorsed, or authorized by its owner.New York Stock Exchange, Inc. v. New York, New York Hotel LLC, 293 F.3d 550, 554-55 (2d Cir. 2002) (citations omitted). The determination of whether a use is likely to cause confusion is guided by Judge Friendly's eight-factor test set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir. 1961).See, e.g., Nabisco II, 220 F.3d at 46. Courts are not to apply this test mechanically — i.e., tallying up how many factors fall into each litigant's column — but rather with a mind to "the ultimate question of whether consumers are likely to be confused." Paddington Corp. v. Attiki Importers Distribs., Inc., 996 F.2d 577, 584 (2d Cir. 1993); see also Nabisco II, 220 F.3d at 46. Although no factor is necessarily dispositive, "in an appropriate case, the `similarity of the marks' factor can be dispositive and will warrant summary judgment for an infringement defendant `if the court is satisfied that the . . . marks are so dissimilar that no question of fact is presented.'" Nabisco II, 220 F.3d at 46 (quoting sources).
Before turning to the eight Polaroid factors, it is necessary to resolve whether defendant's mark at issue here is MOIST ONES or QUILTED NORTHERN MOIST ONES. Playtex contends that MOIST ONES is the relevant mark and points to the fact that Georgia-Pacific submitted an ITU application for that mark, that defendant's internal documents refer to "Moist-Ones," and that the "Moist-Ones" on the product's package is followed by the trademark symbol (tm). Georgia-Pacific insists that its mark is QUILTED NORTHERN MOIST ONES, which is how the product actually appears to consumers in the marketplace. Given the prominence — indeed predominance — of "Quilted Northern" on defendant's product, it is clear that Georgia-Pacific is relying primarily on its own house brand in connection with this product. It defies logic to ignore "Quilted Northern" in the likelihood-of-consumer-confusion analysis. Playtex emphasizes Georgia-Pacific's ITU application for MOIST ONES, but ignores that Georgia-Pacific also applied for the mark QUILTED NORTHERN MOIST ONES. Thus, the analysis that follows is based on a comparison of WET ONES and QUILTED NORTHERN MOIST ONES. 1. Analysis under the eight Polaroid factors
Rather than address Judge Friendly's factors in his sequence, I first address those factors that are relatively insignificant here or are not in serious dispute before discussing those elements that are most significant to the resolution of this matter. First, there can be no serious dispute that the products, customers, and channels of trade are not meaningfully different, if not identical. Moreover, to the extent that the differences between the product segments for plaintiff's and defendant's respective wipes products are significant, there seems little doubt that the other segments would be natural areas of expansion for "Wet Ones." Thus, the competitive-proximity and the bridge-the-gap factors both weigh strongly in Playtex's favor. Second, the sophistication-of-the-buyer factor weighs in Playtex's favor because these products retail for approximately $2.50 and consumers are not likely to spend much time contemplating a purchase of an inexpensive product. See Nabisco I, 191 F.3d at 219 ("Purchasers of relatively inexpensive products are held to a lesser standard of purchasing care." (quoting 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 23:95, at 23-188 (4th ed. 1998))). Third, with respect to the quality of defendant's product, Playtex notes that Georgia-Pacific's first product, "Quilted Northern Fresh Moist," received complaints and that Playtex's own testing reveals that Moist-Ones is inferior in certain characteristics. However, Playtex does not contend, correctly in my view, that any such difference is a major factor here. Thus, three Polaroid factors strongly favor Playtex and one tips slightly in its favor. Next I turn to thePolaroid factors that I believe are most relevant here, namely the strength of WET ONES, the similarity of plaintiff's and defendant's marks, evidence of actual confusion, and defendant's bad faith.
a. Strength of plaintiff's mark
Georgia-Pacific contends that Playtex's mark is weak and entitled to narrow protection on the basis that 1) the mark is merely "descriptive" — i.e., it describes a wipe that is wet and dispensed singly, and 2) it is weak in the marketplace — i.e., there are 225 registered marks that contain "ones," including two other moist-wipes products (Kmart's "Little Ones" and Nice-Pak's "EZ Ones") which Georgia-Pacific argues Playtex has known about and acquiesced in. Playtex contends that its registered mark has been in use for three decades, it has expended substantial amounts of money to advertise and promote "Wet Ones," and that "Wet Ones" is the best-known wipes product.
Nice-Pak's application filed on July 31, 2002 to register EZ Ones is pending and, according to Georgia-Pacific, Playtex has take no action. Playtex asserts that these are not as blatant a copying in that they do not use a "moisture-formative" — i.e.,"wet" or "moist" — and that in any event it has objected to these other products.
For example, a summary of a August 2002 marketing study commissioned by Playtex (not in connection with this litigation) concluded: "As a brand, Wet Ones, dominates the wipes category in terms of awareness and usage. A second tier of brands consists of Kleenex Cottonelle, Wash'N Dri and Dove Body Refreshers."
Playtex also contends that Georgia-Pacific's witness Jill Mattos testified that "Wet Ones" is "a `fairly well-known' brand of wipes." I disagree that her testimony supports this statement — at least the portion of her testimony cited by Playtex. Her testimony was as follows:
Q Wet Ones is a fairly well-known brand of pre-moistened wipes, isn't it?
A. Wet Ones?
Q. Yes.
A. Of pre-moistened personal wipes?
Q. No, just wipes A. I don't know whether it has a high awareness or not.
A mark's eligibility for trademark status and the degree of protection accorded depends on its distinctiveness, which is classified along a scale from least to most distinctive as follows: 1) generic, 2) descriptive, 3) suggestive, and 4) arbitrary or fanciful. See TCPIP Holding Co. v. Haar Communications Inc., 244 F.3d 88, 93 (2d Cir. 2001) (citing Abercrombie Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9-11 (2d Cir. 1976)). Descriptive marks, the second-weakest category, "are marks that describe a product or its attributes." TCPIP Holding, 244 F.3d at 93 (holding that THE CHILDREN'S PLACE, as a mark for a store that sells children's merchandise, is descriptive). Suggestive marks, the second-strongesthighest category, "do not name or describe the product for which they are used, but they suggest the qualities or claims of that product." Nabisco I, 191 F.3d at 215. "They are more distinctive than descriptive marks, and thus are accorded trademark rights without need to demonstrate that consumers have come to associate them with the user of the mark. Nonetheless, because they seek to suggest qualities of the product, they possess a low level of distinctiveness."Id. at 215-16 (citations omitted). Suggestive marks "require `imagination, thought and perception to reach a conclusion as to the nature of goods.'" Time, Inc. v. Petersen Pub. Co. L.L.C., 173 F.3d 113, 118 (2d Cir. 1999) (quoting Abercrombie Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir. 1976)). TIDE for laundry detergent is an example of a suggestive mark. See Wal-Mart Stores, Inc. v. Samara Bros., 529 U.S. 205, 210 (2000).
I conclude that WET ONES is a suggestive mark in that it does not name the product in any way, but merely suggests the qualities of wipes. While the phrase WET ONES is logically related to the wipes it names, it conjures up any number of other products and requires some thought to realize the nature of the product. See BIC Corps. v. Far Eastern Source Corp., No. 99 Civ. 11385 (HB), 2000 WL 1855116, at *3 (S.D.N.Y. Dec. 19, 2000) (holding that WITE-OUT is a suggestive mark because "although the name WITE-OUT is logically related to its use, the phrase without more does not imply a correction product"). Moreover, Playtex has introduced additional evidence to reveal the strength of the WET ONES mark, including marketing surveys performed for Playtex (unrelated to this litigation) and the opinion of Sandra Cohen, who concluded based on her surveys, that "Wet Ones" has become a famous and distinctive brand. Cohen's study found that in the category of pre-moistened wipes, the word "Ones" is strongly associated with the brand WET ONES based on the results of the survey in which 36% of consumers fill in the term " ___ Ones" with "Wet" and that a substantial fraction of consumers who have not heard of Moist Ones "recognize" that it is a brand of pre-moistened towelettes or wipes because of the word "Ones." See Cohen Study at 12, 17.
Playtex argues that Georgia-Pacific's disclaimer of "moist" in its ITU application for "Moist-Ones" constitutes an acknowledgment and admission that MOIST ONES is trademark protectable on the conceptual strength of "ones" — i.e., it is distinctive and capable of identifying a source of the product.
Playtex also contends that Georgia-Pacific is precluded from arguing that WET ONES is descriptive by Park 'N Fly, Inc. v. Dollar Park Fly, Inc., 469 U.S. 189 (1985), in which the Supreme Court stated "We conclude that the holder of a registered mark may rely on incontestability to enjoin infringement and that such an action may not be defended on the grounds that the mark is merely descriptive."Park 'N Fly, 469 U.S. at 205. While Playtex appears to correctly describe this Circuit's interpretation of Park 'N Fly, the Fourth Circuit has squarely rejected this same argument.Compare Gruner + Jahr USA Publishing v. Meredith Corp., 991 F.2d 1072, 1077 (2d Cir. 1993) ("[A] defendant in an infringement suit — where plaintiff has an incontestable mark because of five years' registration — may not succeed in a defense that declares the mark is entitled to no protection because it is descriptive."), with Petro Stopping Centers, L.P. v. James River Petroleum, Inc., 130 F.3d 88, 92 (4th Cir. 1997) ("In Park 'N Fly, the Supreme Court held that a defendant in an infringement suit cannot claim that an incontestable mark is merely descriptive and therefore invalid and undeserving of any protection. The Court did not hold, however, that the descriptive nature of a mark may not be considered in the separate likelihood of confusion inquiry."). Because I conclude that the mark is suggestive, I need not reach this issue.
b. Similarity between plaintiff's and defendant's marks
The main points of similarity between the two marks are the word "ones" and the fact that "moist" and "wet" are synonyms. Cf. 3 McCarthy, McCarthy on Trademarks, supra § 23:43 ("[T]he addition of the defendant's surname to another's product mark was `an aggravation and a not a justification' on the facts of that case. That is, a junior user cannot justify its confusing use of another's mark simply by tacking on its own house mark or tradename."). However, in addition to differences in the way "moist" and "wet" appear and sound, there are several important differences in the way the products are packaged and presented to consumers. For example, on plaintiffs "Wet Ones Flushables" product, "Wet Ones" is rendered in dark blue lettering with green highlights on a light blue background, and "Flushables" is rendered in yellow. In contrast, the words "Quilted Northern" on defendant's product is rendered in white with red highlights on a dark blue background, and "Moist-Ones" is rendered in dark blue. In addition, defendant's package contains the effect of quilting, while plaintiff's has a brush-stroke effect.
See Merriam-Webster's Collegiate Dictionary 748, 1344 (10th ed. 1999).
Most significant for this likelihood-of-confusion analysis is the dissimilarity between the two marks and the presence of defendant's brand. The Second Circuit has found that the dissimilarity in the marks alone can warrant summary judgment for the defendant, especially where the defendant's house brand is prominently displayed and negates any likelihood of confusion. See Nabisco II, 220 F.3d at 48; Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1045-46 (2d Cir. 1992) (holding that packages for EXCEDRIN PM and TYLENOL PM are not confusingly similar). In Nabisco II, the court noted that Dentyne Ice and Ice Breakers are "marginally similar because of the common use of `Ice'" but that "the varying placement of `Ice' is a major difference" and that the "prominent use of [defendant's] well-known house brand therefore significantly reduces, if not altogether eliminates, the likelihood of confusion." Nabisco II, 220 F.3d at 46. Noting that "we must `appraise the overall impression created by . . . the context in which they are found,'" the court then analyzed the packages, including the colors, typefaces, and dimensions of the competing brands. Id. at 47. The court found that the parties' dissimilar use of their marks was determinative. Id. at 48 ("Having determined that the parties' use of their DENTYNE ICE and ICE BREAKERS marks is so dissimilar as to require judgment for Warner-Lambert, we need not examine the remainingPolaroid factors. . . ."). Similarly in W.W.W. Pharm. Co. v. Gillette Co., 984 F.2d 567 (2d Cir. 1993), the court found that Sportstick (for lip balm) and Right Guard Sport Stick (for deodorant) while composed of the same words there were several dissimilarities in the modes of presentation of the products, including the prominence of the well-known brand name "Right Guard," that made confusion less likely. Based on the eight Polaroid factors, the court upheld the district court's finding that there was no likelihood of confusion. See id. at 573.
Thus, the dissimilarity in the mark themselves, the differences in the way the products are presented to consumers, and Georgia-Pacific's prominent use of its own house brand on the product's package negates any likelihood of confusion and this factor, if not dispositive, strongly favors Georgia-Pacific.
c. Actual confusion
In response to a request for admission that "Plaintiff has no evidence that Defendant's unlawful conduct as alleged in the Complaint has caused actual consumer [confusion]," Playtex responded on May 30, 2003 that "Subject to Playtex's right to supplement or amend this response, the Request is admitted." Georgia-Pacific argues that Playtex's failure to show evidence of actual confusion, including its failure to produce a survey on the likelihood of confusion, weighs against a finding of actual confusion. Playtex suggests that this actual-confusion factor is less significant where the products have been competing for only a short time. In addition, at oral arguments, Playtex claimed as evidence of actual confusion the fact that when a user types in "moist ones" into the search function of a popular website (DrugStore.com), the website pulls up several versions of plaintiff's product and none of defendant's product. I find neither of Playtex's arguments persuasive.
Defendant's product has been on the market and in competition with plaintiff's product for approximately fourteen months. Even if Playtex is correct that "Quilted Northern Moist-Ones" has sold less than expected, it has certainly sold enough and over a sufficient period of time for there to have been feedback from consumers who were actually confused about the source of defendant's product. As the Second Circuit observed:
The presence or absence of actual confusion can be highly effective in showing a high, or a low, likelihood of confusion if there has been ample opportunity for consumer confusion. If consumers have been exposed to two allegedly similar trademarks in the marketplace for an adequate period of time and no actual confusion is detected either by survey or in actual reported instances of confusion, that can be powerful indication that the junior trademark does not cause a meaningful likelihood of confusion.Nabisco I, 191 F.3d at 228 (emphasis in original) (citingMcGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1136 (2d Cir. 1979). Plaintiff's failure to point to any such feedback is strong evidence that consumers are not confused. With respect to Playtex's evidence about the website, the fact that the computer associates "moist ones" with "Wet Ones" reflects little, if anything, about whether consumers are actually confused about the affiliation of and association between the products. Once again, if consumers had been confused, it was Playtex's burden to show this confusion. Thus, this factor strongly favors Georgia-Pacific.
d. Defendant's good faith
Playtex concedes that it has no direct evidence that Georgia-Pacific adopted its mark in bad faith, but contends that the surrounding circumstances suggest bad faith. In particular, Georgia-Pacific clearly knew about "Wet Ones" when it adopted "Moist Ones." Also, Georgia-Pacific chose the name "Moist-Ones" based on what one of its employees called a "quick mother-in-law survey" of the people in the office, rather than its normal procedures. Playtex notes that Georgia-Pacific has protected as privileged an opinion of counsel which it obtained, apparently in connection with its choice of names for its rebranded product. Georgia-Pacific counters that it adopted the "Quilted Northern Moist-Ones" name to capitalize on the strength of its Quilted Northern brand for dry bathroom tissue, selected "Moist-Ones" to identify two key characteristics of the product, and presents the mark to consumers very differently than Playtex's mark.
The good-faith factor considers "whether the defendant adopted its mark with the intention of capitalizing on plaintiff's reputation and goodwill and any confusion between his and the senior user's product." Arrow Fastener Co., Inc. v. Stanley Works. 59 F.3d 384, 397 (2d Cir. 1995) (quoting sources). The mere fact that Georgia-Pacific knew about "Wet Ones" alone is insufficient to indicate bad faith. See id. ("Prior knowledge of a senior user's trade mark does not necessarily give rise to an inference of bad faith and may be consistent with good faith."); Brockmeyer v. Hearst Corp., 248 F. Supp.2d 281, 299 (S.D.N.Y. 2003) ("The defendants are correct, however, that awareness of the plaintiff's mark does not mean they acted in bad faith."). With respect to Playtex's contention that Georgia-Pacific's failure to defend on the basis of advice of counsel it obtained leads to a finding of willful infringement, its reliance on UMG Recordings, Inc. v. MP3.Com, Inc., No. 00 Civ. 472 (JSR), 2000 WL 1262568, at *4 (S.D.N.Y. Sept. 6, 2000), is misplaced. There, the plaintiffs offered clear and convincing proof that defendant knew that its actions were presumptively unlawful and defendants offered no credible evidence in rebuttal. UMG Recordings, 2000 WL 1262568, at *4. Accordingly, it is inappropriate to draw an adverse inference based on Georgia-Pacific's invocation of attorney-client privilege. See Nabisco I, 191 F.3d at 226 ("We believe the district court erred in drawing an adverse inference against Nabisco by reason of its invocation of the attorney-client privilege."). To be sure, Georgia-Pacific chose a name that bears some similarity to WET ONES — just as its first product in this category, "Quilted Northern Fresh Moist," bore a notable resemblance to wipes products introduced by its competitors in the paper-products market, "Cottonelle Fresh" and "Charmin Fresh Mates." However, the PTO found no conflict with other marks, including WET ONES, when it reviewed Georgia-Pacific's ITU for MOIST ONES. Thus, Playtex's failure to produce evidence of bad faith strongly favors Georgia-Pacific.
2. Conclusion
In sum, although several Polaroid factors weigh strongly in Playtex's favor, the dissimilarity of the marks and the absence of any proof of either actual confusion or defendant's bad faith compels the conclusion that there is no genuine issue of material fact about the likelihood of consumer confusion caused by Georgia-Pacific's mark. Accordingly, Playtex's motion for summary judgment on its trademark-infringement claim is denied and Georgia-Pacific's motion for summary judgment is granted. In addition, the determination that Playtex fails to raise a genuine issue of material fact about the likelihood of confusion with respect to its trademark-infringement claim similarly disposes of its false-designation-of-origin and unfair-competition claims. See W.W.W. Pharm., 984 F.2d at 570-71 ("In order to prevail on its claims of false designation of origin under 15 U.S.C. § 1125(a) or trademark infringement under 15 U.S.C. § 1114, WWW must show a likelihood of confusion." (footnote omitted)); id. at 576 ("The state law cause of action for unfair competition shares many common elements with the Lanham Act claims of false designation of origin and trademark infringement, including proof of actual confusion to recover damages, and proof of a likelihood of confusion for equitable relief." (citations omitted)).
B. Dilution
The Federal Trademark Dilution Act, enacted in 1995, entitles the owner of a famous and distinctive trademark to enjoin others from using the mark if such use will dilute the senior mark — that is, if the junior user's use will "lessen the capacity of a famous mark to identify and distinguish goods or services." 15 U.S.C. § 1125(c)(l), 1127; see Moseley v. V. Secret Catalogue, Inc., 123 S.Ct. 1115, 1123 (2003) (citing H.R. Rep. No. 104-374, at 1029 (1995)). The five elements of a claim for dilution are 1) that plaintiff's mark is famous, 2) that it is inherently distinctive, 3) that defendant's use of the junior mark is a commercial use in commerce, 4) that defendant's use began after plaintiff's mark became famous, and 5) that defendant's use of the junior mark causes dilution of the distinctive quality of the plaintiff's mark. See Nabisco Inc. v. PF Brands, Inc. ("Nabisco I"), 191 F.3d 208, 215 (2d Cir. 1999). Georgia-Pacific contends that Playtex's claim fails on three elements — that WET ONES is not famous, it is not inherently distinctive, and there is no proof of actual dilution. Georgia-Pacific also contends that this claim fails to meet the Second Circuit's requirement of substantial similarity between the marks. See Mead Data Central Inc. v. Toyota Motor Sales, U.S.A., Inc., 875 F.2d 1026, 1029 (2d Cir. 1989) (LEXUS and LEXIS not substantially similar as a matter of law). In Nabisco I, the Circuit determined that the marks "must be of sufficient similarity so that, in the mind of the consumer, the junior mark will conjure an association with the senior. In that manner the junior mark will lessen the distinctiveness of the senior mark." Id. at 218 (affirming a preliminary injunction where defendant's fish-shaped cheese crackers came in a package with other animal-shaped crackers and were different than plaintiff's in size, shape and markings, but where the products were sufficiently similar to lessen the distinctiveness of plaintiff's cracker); cf. Moseley, 123 S.Ct. at 1124 ("Even if the legislative history might lend some support to such a contention [that the FTDA is confined to identical uses of famous marks], it surely is not compelled by the statutory text."). Because I concluded above that the dissimilarity of WET ONES and QUILTED NORTHERN MOIST ONES was a major reason that there was no likelihood of consumer confusion, it follows that the marks are not sufficiently similar to support a claim for dilution under either the federal or state statute. As noted above, the differences between the junior and senior marks here are greater than their similarities, such that there is little likelihood of an association in the mind of the consumer. This is confirmed by the total lack of evidence of actual confusion. Although the FTDA provides the holder of a senior mark a remedy without proof of actual dilution,see 15 U.S.C. § 1125(c), actual dilution is one of ten factors suggested by the Circuit for determining dilution. See Nabisco I, 191 F.3d at 217-22.
The FTDA provides:
The owner of a famous mark shall be entitled, subject to the principles of equity and upon such terms as the court deems reasonable, to an injunction against another person's commercial use in commerce of a mark or trade name, if such use begins after the mark has become famous and causes dilution of the distinctive quality of the mark, and to obtain such other relief as is provided in this subsection.15 U.S.C. § 1125(c)(1).
Nabisco I. 191 F.3d at 217-22. These ten factors are:
(a) Distinctiveness of the senior mark.
(b) Similarity of the senior and junior marks.
(c) Proximity of the products and likelihood of bridging the gap. (d) Interrelationship among the distinctiveness of the senior mark, the similarity of the junior mark, and the proximity of the products.
(e) Shared consumers and geographic limitations.
(f) Sophistication of consumers.
(g) Actual confusion.
(i) Harm to the junior user and delay by the senior user.
(j) Effect of senior's prior laxity in protecting the mark.
Accordingly, Georgia-Pacific's motion for summary judgment on Playtex's federal and state dilution claims is granted.
III. CONCLUSION
For the foregoing reasons, Playtex's motion for summary judgment on its federal trademark-infringement claim is denied, and Georgia-Pacific's cross-motion for summary judgment on Playtex's federal claims for trademark infringement, false designation of origin, and dilution and its pendant state-law claims for unfair competition and dilution is granted.The Clerk of the Court is instructed to close this case, close any open motions, and remove the case from my docket
IT IS SO ORDERED.